Wenzel Downhole Tools Ltd. v. National-Oilwell Canada Ltd.

Wenzel Downhole Tools Ltd. v. National-Oilwell Canada Ltd.
Court (s) Database
Federal Court Decisions
Date
2011-11-29
Neutral citation
2011 FC 1323
File numbers
T-1327-05
Decision Content
Date: 20111129
Docket: T-1327-05
Citation: 2011 FC 1323
BETWEEN:
WENZEL DOWNHOLE TOOLS LTD.
and WILLIAM WENZEL
Plaintiffs
and
NATIONAL-OILWELL CANADA LTD.,
NATIONAL OILWELL NOVA SCOTIA COMPANY, NATIONAL OILWELL
VARCO INC., DRECO ENERGY
SERVICES LTD., VECTOR OIL TOOL LTD. and FREDERICK W. PHEASEY
Defendants
AND BETWEEN:
NATIONAL-OILWELL CANADA LTD.,
NATIONAL OILWELL NOVA SCOTIA COMPANY, NATIONAL OILWELL
VARCO INC., DRECO ENERGY
SERVICES LTD., VECTOR OIL TOOL LTD. and FREDERICK W. PHEASEY
Plaintiffs by Counterclaim
and
WENZEL DOWNHOLE TOOLS LTD
and WILLIAM WENZEL
Defendants by Counterclaim
PUBLIC REASONS FOR JUDGMENT
(Confidential Reasons for Judgment released November 18, 2011)
SNIDER J.
I. INTRODUCTION
[1] Mr. William (Bill) Wenzel is the named inventor and Wenzel Downhole Tools Ltd. (Wenzel Tools) is the registered patent holder of Canadian Patent No. 2,026,630 (the '630 Patent). As stated in the '630 Patent, the patent relates to a “method of increasing the off bottom load capacity of a bearing assembly”. The bearing assembly designed by Bill Wenzel is a piece of equipment intended for use in the drilling of oil and gas wells.
[2] By Statement of Claim filed July 29, 2005 (Federal Court File No. T-1327-05), Bill Wenzel and Wenzel Tools (collectively, the Plaintiffs) claim that the Defendants have infringed the '630 Patent through the manufacture and sale or rental of bearing assemblies that are identical in all material respects to those protected by the '630 Patent. In their Statement of Defence and Counterclaim, the Defendants claim that the '630 Patent is invalid.
II. ISSUES AND SUMMARY OF DECISION
[3] Although the Statements of Claim and Defence and Counterclaim raise many issues, by the time the trial of this action was completed, only a few questions remained.
[4] The Defendants concede that, if the '630 Patent is held to be valid, the tools rented or sold by the Defendants, or some of them, infringe the '630 Patent. Thus, the following are the remaining overarching issues for consideration:
1. Are Claims 1 and 2 of the '630 Patent invalid for the reason that:
a. the claims were anticipated by a drilling motor referred to as the “3103 assembly”, which was manufactured and rented to a third party for use in drilling an oil well in Texas prior to the relevant date of the '630 Patent;
b. the claims were made obvious by the prior art existent at the relevant date; or
c. the '630 Patent failed to have utility as promised by the '630 Patent?
2. In the event that the '630 Patent was valid and infringed, what remedies should be awarded to the Plaintiffs?
[5] For the reasons that follow, I have determined that Claims 1 and 2 of the '630 Patent are invalid either on the basis of anticipation or obviousness. Given these determinative findings, there is no need to consider the issues of utility or remedies.
III. TABLE OF CONTENTS
[6] To assist the reader, the following sets out a Table of Contents for these Reasons, containing references to the relevant paragraph numbers for each subject area.
I. INTRODUCTION ........................................................................... 1 - 2
II. ISSUES AND SUMMARY OF DECISION ...................................... 3 - 5
III. TABLE OF CONTENTS........................................................................... 6
IV. BACKGROUND .......................................................................... 7 - 32
A. The patent and the parties ...................................................... 7 - 16
B. The use of bearings in downhole drilling motors................... 17 - 22
C. Witnesses ....................................................................... 23 - 32
(1) Plaintiffs’ witnesses....................................................... 24 - 25
(2) Defendants’ witnesses ................................................. 26 - 32
V. CLAIMS CONSTRUCTION........................................................... 33 - 78
A. Applicable principles of claims construction ......................... 33 - 41
B. Person of ordinary skill in the art.......................................... 42 - 46
C. The '630 Patent...................................................................... 47 - 48
D. The claims ........................................................................ 49 - 73
(1) Application of the claims to a downhole drilling
motor ........................................................................ 56 - 66
(2) “Telescopically received” .................................................... 67
(3) “Generally aligned” vs “generally parallel”...................... 68 - 71
(4) “Inner tubular member”................................................ 72 - 73
E. Essential elements.................................................................. 74 - 76
F. Conclusion on claims construction........................................ 77 - 78
VI. ANTICIPATION ...................................................................... 79 - 146
A. General principles.................................................................. 80 - 90
B. Application to the evidence.................................................. 91 - 144
(1) Does the 3103 assembly contain the subject matter
of the '630 Patent?..................................................... 96 - 104
(2) Did the 3103 assembly pre-date the '630 Patent? ..... 105- 113
(3) Was the 3103 assembly available to the public? ....... 114 - 144
(a) Sufficiency of the disclosure ...................... 116 - 124
(b) Confidentiality............................................ 125 - 138
(c) Experimentation ........................................ 139 - 144
C. Conclusion on anticipation ............................................... 145 - 146
VII. OBVIOUSNESS ................................................................................... 147 - 207
A. Legal principles ................................................................. 148 - 150
B. The person skilled in the art........................................................ 151
C. Common general knowledge ............................................. 152 - 173
D. The inventive concept........................................................ 174 - 175
E. Differences between the matter cited as forming part of
the "state of the art" and the inventive concept ............... 176 - 191
F. Obviousness of the differences .......................................... 192 - 204
G. Conclusion on obviousness................................................ 205 - 207
VIII. UTILITY .................................................................... 208 - 213
IX. CONCLUSION ................................................................... 214 - 220
IV. BACKGROUND
A. The patent and the parties
[7] In an Agreed Statement of Facts and Exhibits (collectively, Exhibit 1), the parties agreed to a large number of facts concerning the '630 Patent history and the parties to this litigation. In this section of the reasons, the facts that are material to the issues in this action are set out.
[8] Mr. Bill Wenzel applied for the '630 Patent on October 1, 1990. The patent application was published (or “laid open”) on April 2, 1992 and the '630 Patent was granted to Bill Wenzel on May 17, 1994. Bill Wenzel is the named inventor.
[9] By Assignment dated December 8, 1997, Bill Wenzel assigned his “entire right, title and interest” in the '630 Patent to Wenzel Downhole Tools Inc. By Assignment dated December 17, 1997, Wenzel Downhole Tools Inc. assigned its “entire right, title and interest” in the '630 Patent to Master Downhole Canada Inc. On February 25, 1998, Master Downhole Canada Inc. changed its name to Wenzel Downhole Tools Ltd. (Wenzel Downhole), the second Plaintiff in this action.
[10] The corporate Defendants are all related corporations. Mr. Frederick W. Pheasey, who is a director of Dreco Energy Services ULC, successor in interest to Dreco Energy Services Ltd. (Dreco), is also a named Defendant.
[11] The ultimate parent corporation of all the other corporate Defendants is the Defendant National Oilwell Varco Inc. (Varco), a body corporate registered under the laws of the State of Delaware with its head office in Houston, Texas.
[12] The other corporate Defendants are:
· National-Oilwell Canada Ltd., a body corporate registered under the laws of Alberta and carrying on business in Alberta and elsewhere in Canada;
· National Oilwell Nova Scotia Company, a body corporate registered under the laws of Nova Scotia; and
· Vector Oil Tool Ltd., now known as Vector Oil Tool ULC (Vector), a body corporate registered under the laws of Alberta.
[13] Although not named as parties to this action, Griffith Oil Tool Ltd. (Griffith) and Mr. Kenneth (Ken) Wenzel, have played significant roles in the matters leading to this litigation.
[14] Ken Wenzel is Bill Wenzel’s older brother. Griffith was a corporation incorporated in 1974 in which Ken Wenzel owned 10% of the shares and Dreco (or a predecessor) owned 90% of the shares. In approximately 1980, Ken Wenzel ceased to be a shareholder in Griffith. “Griffith Oil Tool” and “Griffith” have been trade names often used by Dreco and other affiliates of Varco to identify downhole drilling tool products, including positive displacement drilling motors, drilling jars and service tools, which Dreco and other affiliates of Varco sell, rent and maintain through various facilities worldwide.
[15] Ken Wenzel owns Kenneth H. Wenzel Oilfield Consulting Inc. (Ken Wenzel Consulting). In October 1986, Ken Wenzel Consulting entered into a contract with Dreco to provide Ken Wenzel’s services in the design and development of drilling tools. Effective January 1, 1991, the obligation of Ken Wenzel Consulting to provide Ken Wenzel’s services to Dreco was terminated.
[16] As a consequence of the settlement of litigation in Alberta Court of Queen’s Bench (Action Numbers 0203 12910 and 0603-14265), Ken Wenzel has agreed to pay a portion of damages awarded against Dreco or Vector in this action.
B. The use of bearings in downhole drilling motors
[17] The dispute between the parties to this litigation centres on a piece of oilfield equipment which facilitates the drilling of oil and gas wells. All of the expert witnesses assisted me in understanding the technical aspects of drilling operations and, in particular, the function of downhole drilling motors and the bearing assemblies in those motors.
[18] Oil and gas wells are drilled through earth and rock by rotating a drill bit on the bottom end of drill pipe. For deeper wells and wells that deviate from vertical – known generally as directionally or horizontally drilled wells – the drill bit is often rotated by means of a downhole drilling or “mud” motor which is located close to the drill bit. The mud motor uses the energy of flowing drilling mud in the wellbore to turn a shaft that is connected to the drill bit and, thus, makes it possible to drill a well without the need for the entire drill stem to rotate during the drilling operation.
[19] Bearings are not unique to the oilfield; they are useful whenever there is relative movement between two parts of a machine or apparatus. Bearings (such as balls or rollers) are usually located between two races. Because the bearings are able to move more freely within the constraints of their races than the surrounding components, they have a much lower coefficient of friction than if two flat surfaces were rotating against each other. They can, thus, reduce rotational friction and support radial and axial loads.
[20] “Bearing assembly” is the term used to describe the entire design context within which the bearings are placed. A bearing assembly may include a number of different components such as races, springs and washers to assist in the handling of the specific loads for a given application or to enhance durability of the bearing assembly. Bearing assemblies can be designed to support loads perpendicular to the axis (“radial loads”) or parallel to the axis (“axial loads”). Axial load-bearing assemblies are commonly referred to as “thrust bearings”. Bearing assemblies that are intended to handle both compression and tension loading are known as “bi-directional thrust bearing assemblies”.
[21] In the context of downhole mud motors and oil and gas well drilling, axial loads (acting parallel to the drill stem) are the main forces on the drilling apparatus. Axial loading can be in one of two directions:
i) compression load – also referred to as on-bottom load – created as the bit and drill stem are forcing through the earth or rock; or
ii) tension load – also referred to as off-bottom load – created as the bit and drill stem are lifted.
Although the main loads in drilling a well would be axial, radial loads will also be encountered, particularly where deviated wells are drilled.
[22] The bi-directional thrust bearing assembly designed and patented by Bill Wenzel is an example of a bi-directional thrust bearing assembly for use in downhole drilling motors.
C. Witnesses
[23] During nine days of evidence, a number of fact and expert witnesses appeared. A brief summary of the witnesses and the areas their testimony addressed is described in this section of the reasons.
(1) Plaintiffs’ witnesses
[24] Mr. Bill Wenzel was the only fact witness for the Plaintiffs. He is a machinist and a designer of downhole drilling tools. He is listed as the inventor or co-inventor on approximately 30 US and Canadian patents for downhole drilling tools, including the '630 Patent. In his testimony, Bill Wenzel spoke to a number of topics including:
· his business relationships with his brothers, Ken, Doug, and Bob Wenzel;
· the mechanics of downhole drilling and downhole drilling tools;
· the development of the '630 Patent and its operation;
· prior art;
· a previous infringement action; and
· damages.
[25] Mr. Brian Thicke is a professional engineer, currently employed by a consulting engineering firm in Edmonton. Of relevance to this case, Mr. Thicke has experience in the oil and gas industry and with downhole tools. He has also worked with bearings and bearing assemblies in a variety of applications. Mr. Thicke was qualified by the Court as an expert regarding the design and operation of mechanical devices, including bearings, bearing assemblies and downhole earth drilling tools. Mr. Thicke provided his expert opinion on the issues of claims construction, infringement, anticipation, obviousness, utility and the promise of the patent, the person of ordinary skill in the art and the general knowledge at the relevant time.
(2) Defendants’ witnesses
[26] Mr. Ken Wenzel was a key fact witness for the Defendants. Ken Wenzel holds several patents related to the oil and gas industry. He spoke to a number of topics including:
· His business relationships with his brothers;
· his involvement in a number of different companies in the downhole drilling tools industry;
· the development and use of the 3103 assembly (described later in these Reasons); and
· his knowledge of the '630 Patent.
[27] Mr. David Kutinsky was a fact witness for the Defendants. He is a draftsman in the oil industry and he has worked with a number of downhole drilling tools including drilling jars, shock tools, mud motors and their components. Of particular relevance, Mr. Kutinsky worked with Mr. Ken Wenzel at Griffith. His testimony included the following topics:
· the operation of a bearing assembly;
· his working relationship with Ken Wenzel;
· the development of the 3124, 238, 3103, and 3104 bearing assemblies; and
· the design process, including document dating procedures.
[28] Mr. Wayne Kanak, a fact witness for the Defendants, is an intellectual property lawyer for Schlumberger Canada Limited (Schlumberger). He previously acted as patent counsel for that company. Mr. Kanak gave evidence regarding the operations of Anadrill, a former division of Schlumberger and his investigation into the allegation of infringement of Bill Wenzel’s US patent for the '630 bearing assembly.
[29] Mr. Michael Finnie is a digital forensic specialist. His work involves identifying, collecting, preserving and analyzing digitally stored evidence, often in the course of litigation. He is also an instructor at the University of Washington in the Computer Forensics certificate program. The Court qualified Mr. Finnie as an expert in digital forensics to give evidence regarding the collection, preservation, and analysis of digitally stored media, software and files, including the forensic analysis of electronic discovery and the assessment and analysis of metadata and encrypted information on digitally stored media, software and files, including items such as dates. Mr. Finnie spoke to the nature of metadata and his analysis of the creation date of various AutoCAD files of the Defendants.
[30] Mr. Allan Nelson is a professional engineer with a consulting firm. He has been involved in drilling and service rig repair, design and operation since obtaining a degree in mechanical engineering in the design field. Mr. Nelson’s consulting work includes drill pipe and bottom hole tool failure analysis, downhole equipment design, and general machinery design. Mr. Nelson has done patent analysis work and he has also worked with bearings, bearing assemblies, tubular members, axial and radial forces, and relative rotation dynamics. Mr. Nelson was qualified by the Court as an expert mechanical engineer regarding the construction and scope of the '630 Patent, prior art relating to the '630 Patent, specifically regarding anticipation and obviousness, and the characteristics of a person of ordinary skill in the art. Mr. Nelson provided opinions on the person of ordinary skill in the art, claims construction, prior art, obviousness, inventiveness, and utility.
[31] Dr. Gary Wooley is a consulting petroleum and mechanical engineer and a registered professional engineer in Texas. He holds a PhD in engineering science. The Court qualified Dr. Wooley as an expert in petroleum and mechanical engineering to give expert opinion evidence on the construction and scope of the '630 Patent, prior art relating to anticipation and obviousness, and the characteristics of a person of ordinary skill in the art. Dr. Wooley spoke to all of those issues, particularly prior art and the common general knowledge of the person of ordinary skill in the art. Dr. Wooley also provided assistance to the Court on the issue of utility.
[32] Mr. Jack Miller is a professional mechanical engineer. He has experience in the field of mechanical design, including the design of a mud motor driven core barrel. Several patents have been filed in his name. Mr. Miller was qualified by the court as an expert mechanical engineer to give expert opinion evidence on the construction and scope of the '630 Patent, prior art, obviousness, utility, and characteristics of a person of ordinary skill in the art. Mr. Miller provided opinions on all of these issues, particularly prior art and the terminology used in the '630 claims. Mr. Miller also considered the Canadian and US file wrappers and spoke to the availability of the prior art.
V. CLAIMS CONSTRUCTION
A. Applicable principles of claims construction
[33] Before turning to the issues of invalidity and infringement, as taught by the Supreme Court of Canada, I must construe the relevant claims of the '630 Patent (Whirlpool Corp v Camco Inc, 2000 SCC 67 at para 43, [2000] 2 SCR 1067 [Whirlpool]; Free World Trust v Électro Santé Inc, 2000 SCC 66 at para 15, [2000] 2 SCR 1024 [Free World Trust]).
[34] In construing this patent, I am mindful of the guidance from the decisions of the Supreme Court of Canada (Whirlpool, above; Free World Trust, above). These cases teach that patent claims are to be construed in an informed and purposive fashion and that excessive literalism is to be avoided. As Justice Binnie explained in Whirlpool, above at paragraph 45:
The key to purposive construction is therefore the identification by the court, with the assistance of the skilled reader, of the particular words or phrases in the claims that describe what the inventor considered to be the “essential” elements of his invention.
[35] Construction of the patent must be done through the eyes of a person of ordinary skill in the art. My first task is to determine the attributes of such a person. The Supreme Court offered the following guidance on the identification of the person of ordinary skill in the art in Whirlpool, above at paragraph 53:
[T]he patent specification is not addressed to grammarians, etymologists or to the public generally, but to skilled individuals sufficiently versed in the art to which the patent relates to enable them on a technical level to appreciate the nature and description of the invention: H. G. Fox, The Canadian Law and Practice Relating to Letters Patent for Inventions (4th ed. 1969), at p. 185.
[36] In Free World Trust, above at paragraph 44, Justice Binnie stated as follows:
The patent is not addressed to an ordinary member of the public, but to a worker skilled in the art described by Dr. Fox [in Fox, Harold G. The Canadian Law and Practice Relating to Letters Patent for Inventions, 4th ed. Toronto: Carswell, 1969, at 184] as
a hypothetical person possessing the ordinary skill and knowledge of the particular art to which the invention relates, and a mind willing to understand a specification that is addressed to him. This hypothetical person has sometimes been equated with the “reasonable man” used as a standard in negligence cases. He is assumed to be a man who is going to try to achieve success and not one who is looking for difficulties or seeking failure.
(Fox, supra, at p. 184)
[37] For purposes of claims construction, the relevant date is the date of the publication or the date upon which the patent was laid open (Free World Trust, above at paras 53-54). In this case, that date is April 2, 1992.
[38] In general, what makes an element essential? A useful explanation was provided by Lord Diplock in the House of Lord's decision in Catnic Components Ltd v Hill & Smith Ltd, [1982] RPC 183 at 242-243 (cited in Whirlpool, above at para 44):
My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. “skilled in the art”), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called “pith and marrow” of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.
[Italics in original; underlining added].
[39] In very succinct terms, an essential element is one that, if it were changed, would affect how the invention works.
[40] A difference of opinion has arisen in this case as to the extent to which the patent specification may play a role in the construction of the claims. The question is always what the person skilled in the art would have understood the language of the claim to mean. For this purpose, the language the patentee has chosen is usually of critical importance. However, the jurisprudence teaches that, where necessary, the whole of the patent, and not only the claims, should be considered (Eli Lilly Canada Inc v Apotex Inc, 2008 FC 142 at para 25, 323 FTR 56; Eli Lilly Canada Inc v Novopharm Ltd, 2007 FC 596 at para 103, [2008] 2 FCR 749). The Court should construe the claims in light of the description in the specification, assisted by experts as to the meaning of technical terms if such terms cannot be understood by the Court from reading the specification (Shire Biochem Inc. v. Canada (Minister of Health), 2008 FC 538 at para 22, 328 FTR 123 ; Whirlpool, above at para 45). But, as strongly cautioned by the jurisprudence, the specification may not be used to expand or contract the substance of what is claimed (Whirlpool, above at para 52; Janssen-Ortho Inc v Canada (Minister of Health), 2010 FC 42 at paras 115-19, 361 FTR 268).
[41] With these principles in mind, I turn to the '630 Patent. I will begin by defining our person of ordinary skill in the art. I will then move to the patent description and claims, focusing on the points of disagreement between the parties. Finally, in light of the analysis, I will set out what I believe would be seen as the essential elements of the '630 Patent.
B. Person of ordinary skill in the art
[42] As noted above, the relevant claims of the '630 Patent must be construed from the point of view of a person of ordinary skill in the art. The Plaintiffs correctly highlight the word “ordinary” in the context of describing our notional person of ordinary skill in the art. I agree that persons such as the experts who presented their opinions during this trial and the inventor, Bill Wenzel, and his brother, Ken Wenzel, should not be considered to be the person of ordinary skill to whom the patent is addressed. However, also correctly, the Defendants emphasize that this person must have “skill in the art”.
[43] Each of the experts provided me with their criteria for the skilled person. Dr. Wooley, in his expert report described the person of ordinary skill in the art as follows (Exhibit 1, Tab 59, s 1.2.1.).
In my experience with directional drilling and the mechanics of downhole tools such as mud motors, persons skilled in the art that might try to understand the Wenzel 630 Patent and other similar devices would be a person with mechanical aptitude and experience, some understanding of downhole conditions and operations, and a reasonable amount of training, but may not be a degreed engineer.
In his Rebuttal Report, Mr. Thicke, the expert retained by the Plaintiffs, agreed with this description (Exhibit 1, Tab 54, Appendix 12).
[44] When asked during his examination-in-chief, Mr. Miller provided an excellent description of the skilled person’s attributes:
Well, it would obviously be someone who is -- who is [in the] business is to develop downhole tools and that it would be somebody who has had to struggle with packaging bearing assemblies, maybe someone who has -- has actually seen a service problems, has experience with service problems with bearings and one who would be on the lookout for a bearing assembly that might work for him.
As far as how technically talented they are, I think they would be very technically talented. Education is no certification of that, in my opinion. So it could be somebody who has worked in the shop, although not likely, is probably someone who actually had to do the layouts of how these things all fit together on paper, you know. So it's not likely to be somebody who just -- who is a service hand, so to speak. It will be somebody who is inclined to understand and appreciate how these tools work.
[45] While the other experts who opined on the skilled person used somewhat different language, their views did not diverge substantially from those of Dr. Wooley, as further refined by Mr. Miller.
[46] Taking all of these comments into account, I am satisfied that, while our skilled person may not have much formal education, he (or she) has the ability to understand the drawings and claims of a patent in the field. From his experience, he would have a working knowledge of many mechanical devices – how they are constructed, used and how they work. This knowledge would extend to an understanding of how oil and gas wells are drilled, including the various drilling environments. He would also have a basic (albeit not highly technical) comprehension of the forces that are in play under different conditions. He may have some experience adapting or modifying existing tools to meet a need; to that extent, he would have some limited ability to design devices. The characteristics of the person that I have described, in my view, strike a balance between someone who is merely “ordinary” and someone who brings inventiveness to the task at hand.
C. The '630 Patent
[47] In assessing the claims of the patent, it is useful to begin with an overview of how the bearing assembly of the '630 Patent is intended to work. In this regard, the experts did not disagree. The diagram below is a replication of Figure 2 from the patent, with the addition of label “14” to depict the inner tubular member. Figure 2 is a close-up version of the bearing assembly set out in Figure 1 of the '630 Patent.
[48] The operation of the assemply depicted in Figures 1 and 2 is set out at page 7 of the Patent and was described in clear terms by Mr. Miller (Exhibit 1, Tab 58B at 3) as follows:
Figure 1 illustrates a schematic of the bearing chamber described in the 630 Patent defined by the downwardly facing outer shoulder 20, the downwardly facing inner shoulder 26, the upwardly facing outer shoulder 22, and the upwardly facing inner shoulder 28. What is described and depicted in the figure is simply a four-shouldered thrust bearing containment chamber 32 formed between the outer tubular member 12 and the inner tubular member 14. The containment chamber is also described (or defined) in claims 1a, 1b, 2a, and 2b of the 630 Patent.
The thrust bearing assembly inclusive of races and rollers is shown in Figure 1 as items 34, 36, and 18.
[diagram omitted]
As the inner tube 14 (mandrel) moves upward with respect to the outer tube 12 (housing) (the “on-bottom” condition, meaning while drilling on the well bottom) from the neutral position, the chamber between the closing shoulders becomes shorter. Similarly, as the inner tube moves downward with respect to the outer tube (the “off-bottom” condition, meaning the assembly is lifted from the on-bottom position) from the neutral position, the chamber between the shoulders also becomes shorter.
Since the thrust bearing spans across the inner and outer shoulders, it is obvious that the motion in either direction (i.e., compression or tension) loads the bearing in compression. The stated advantages of this arrangement are that it allows for a single bearing assembly to be used for both thrust directions and, therefore, the assembly may be shorter than would be possible if using separate bearings for upward thrust loads and downward thrust loads.
D. The claims
[49] The '630 Patent makes three claims. Only Claims 1 and 2 are in issue in this trial.
[50] Claim 1 of the '630 Patent is a claim to a method of operating a bearing assembly using the known components set out in the introduction and the novel steps described in sub-items a, b and c of Claim 1:
1. A method of increasing the off bottom load capacity of a bearing assembly having an outer tubular member, an inner tubular member telescopically received within the outer tubular member, and bearings disposed between the inner tubular member and outer tubular member to facilitate relative rotation of the outer tubular member and inner tubular member while accommodating radial and axial loads, comprising the steps of:
a. firstly, forming a first shoulder and a second shoulder in opposed spaced relation on an interior surface of the outer tubular member;
b. secondly, forming a first shoulder and a second shoulder in opposed spaced relation on an exterior surface of the inner tubular member, the shoulders on the inner tubular member being generally aligned with the shoulders on the outer tubular member thereby defining a containment chamber; and
c. thirdly, placing at least one thrust bearing in the containment chamber, the thrust bearing having a first side race and a second side race, such that when the bearing assembly is placed in compression the first shoulder of the outer tubular member bears against the first side race and the second shoulder of the inner tubular member bears against the second side race, and when the bearing assembly is placed in tension the second shoulder of the outer tubular member bears against the second side race and the first shoulder of the inner tubular member bears against the first side race.
[51] Claim 2 is a claim to an improvement in a bearing assembly. The improvement consists of sub-items a, b and c. It is significant that Claim 2 is not a dependent claim; apparently, the inventor intended that each of the two Claims could stand on its own.
2. An improvement in a bearing assembly having an outer tubular member, an inner tubular member telescopically received within the outer tubular member, and bearings disposed between the inner tubular member and outer tubular member to facilitate relative rotation of the outer tubular member and inner tubular member while bearing radial and axial loads, the improvement comprising:
a. a first shoulder and a second shoulder in opposed spaced relation on an interior surface of the outer tubular member;
b. a first shoulder and a second shoulder in opposed spaced relation on an exterior surface of the inner tubular member, the shoulders on the inner tubular member being generally parallel to the shoulders on the outer tubular member thereby defining a containment chamber; and
c. at least one thrust bearing disposed in the containment chamber, the thrust bearing having a first side race and a second side race, such that when the bearing assembly in placed in compression the first shoulder of the outer tubular member bears against the first side race and the second shoulder of the inner tubular member bears against the second side race, and when the bearing assembly is placed in tension the second shoulder of the outer tubular member bears against the second side race and the first shoulder of the inner tubular member bears against the first side race.
[52] Other than a grammatical change of tense to reflect the difference between a “method” (Claim 1) and an “improvement” (Claim 2), there is little difference between the two claims.
[53] Claim 3 is not directly in issue. This claim refers to a biasing means (spring) added to the containment chamber referred to in Claims 1 and 2. In other words, Claim 3 is a dependent claim. Thus, if I conclude that Claims 1 and 2 are invalid, Claim 3 will necessarily fail.
[54] The question of the appropriate claims construction focused on a number of specific terms and issues:
(a) Do the claims support a meaning that would limit their application to a downhole drilling motor?
(b) What is the meaning of “telescopically received” in Claims 1 and 2?
(c) What if anything is the significance of the use of the words “generally aligned” in Claim 1 as opposed to “generally parallel” in Claim 2?
(d) Does the term “inner tubular member” encompass both a cylindrical tube and a shaft?
[55] I will consider each of these questions.
(1) Application of the claims to a downhole drilling motor
[56] A major point of disagreement on claims construction is the question of the field of endeavour to which the claims relate. In the view of the Defendants, the claims are non-industry and non-product specific. In contrast, the Plaintiffs submit that the claims are related to a bearing assembly used in downhole earth-drilling.
[57] The Defendants rely on the testimony of Bill Wenzel to support their view that the claims are not limited to any industry-specific application. In particular, they point to the following exchange that took place during the cross-examination of Bill Wenzel by counsel for the Defendants:
Q So are there any -- let's put it this way. Can I -- would you agree that the essence of your claimed invention is -- consists of the following. First of all, you've got four shoulders forming a containment unit?
A That's correct.
Q Secondly, you've got bearings in that containment unit?
A Correct.
Q One or more bearings, at least one bearing?
A That's correct.
Q You've got races?
A That's correct. That's part of the bearing.
Q Goes on either side of the bearing, is that it?
A Yes, a bearing consists of basically three parts: a race, rollers and a race.
Q Well, a bearing can be a ball bearing as well?
A Yes, but it still has races on both sides.
Q No, I don't dispute that. Just trying to suggest to you that a bearing could be either a roller bearing or a ball bearing?
A Well, absolutely.
Q So bearings and races, or if you want to say bearings including races, we're in agreement on that?
A Yes.
Q Okay, and then there's relative rotation between the outer and the inner tubular members; right?
A That's correct.
Q And that fancy term, outer and inner tubular members, is really simply a technical way, if you like, of describing a tube?
A That's correct.
Q A cylinder maybe?
A Yes.
Q Okay, so if you have those four things, if we can just go through them: the shoulders creating -- the four shoulders creating a containment unit; the bearings and races, if you include that as part of the bearings, or separately if you don't, but, in any event, and you've got relative rotation between the cylinders. Is that the essence of your claimed invention?
A I guess, yes. Yes.
[58] The problem with the Defendants’ reliance on Bill Wenzel’s opinion for the construction of the patent is that Bill Wenzel is neither an expert entitled to provide me with opinion evidence nor a person of ordinary skill in the art through whose eyes I am to read the claims. For one thing, Bill Wenzel’s simple description of the essence of his invention did not include certain of the components or elements identified by the experts. Specifically, a person of ordinary skill in the art would read the claims to include the placement and special relationship between the shoulders and the tubular members. Bill Wenzel’s description of his invention is not of particular assistance on the question of claims construction.
[59] I acknowledge that the words of Claim 2 do not explicitly use the words “downhole” or “oil and gas” or “mud motor”. Would that lead a skilled reader to the conclusion that the claims – and, in particular, Claim 2 – are non-industry and non-product specific? I do not think that it would.
[60] As observed by the Defendants, the “preamble” to both Claim 1 and Claim 2 is a statement of the state of the art; the elements of the invention that are allegedly new and novel are set out in sub-claims a, b and c of each of the claims. In the preamble to Claim 1, the term “off bottom” is used. As confirmed by Mr. Thicke, this is a term normally associated with earth drilling. Yet, in an almost identical Claim 2, the term “off bottom” is not used. In light of this odd omission, my view is that the skilled reader would look to the specification for assistance in ascertaining the purpose and meaning of the claims.
[61] To give a purposive construction to the claims of a patent, it seems to me that one should understand the purpose of the invention and the problem that the invention sought to address. For the most part, inventors come to their patentable inventions in order to solve a problem. What was the problem that the '630 Patent was intended to address?
[62] As set out in the specification of the '630 Patent, until Bill Wenzel’s invention, it was the practice in the industry to have two separate g